Taking advantage of the reputation of the earlier trade mark
PEAR/ APPLE BITE R 0860/2016-5 (Cl. 9, 35, 42) – EUTM applied for Earlier trade mark (EU)
Decision confirmed KEYWORDS: Conceptual similarity, Distinctive element, Due cause, Figurative element, Figurative trade mark, Identity between the goods and services, Nature of the goods and services, Phonetic Alicante News Up to date information on IP and EUIPO-related matters March 2017.
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Article 8(5) EUTMR FACTS: An opposition was filed against the published trade mark application ‘PEAR’ as represented above.
The opposition was based on several earlier rights, but the Board primarily took the ‘APPLE BITE’ trade mark, as represented above, into consideration for which reputation under Article 8(5) EUTMR was claimed.
The Opposition Division upheld the opposition.
The Board found that there is a remote visual similarity and a low level of conceptual similarity between the marks.
It follows from case-law, that the existence of a visual and conceptual similarity, however faint, is a precondition for the application of Article 8(5) EUTMR and that the degree of similarity is a relevant factor in determining whether there is a link between those signs (judgment of 11/12/2014, T-480/12, MASTER, EU:T:2014:1062, § 73) (§ 33).
The evidence submitted by the opponent before the Opposition Division provides enough proof to determine that the earlier Apple logo had acquired a high degree of reputation for the relevant goods and services in the relevant territory before the filing of the contested application (§ 36).
As regards unfair advantage, according to the Board the applicant has sought to mimic the iconic image of an apple by taking the fruit which is closest to that image, namely a pear, and riding on the coattails of the Apple brand’s customer base (§ 60).
The Board concludes, in line with the Opposition Division, that in view of the substantial exposure of the public to the opponent’s earlier reputed mark there exists a probability that the use without due cause of the contested sign may acquire some unearned benefit and lead to free- riding, that is to say, it would take unfair advantage of the earlier trade mark’s distinctive character and repute (§ 66).
Accordingly, the appeal is dismissed and the contested decision is confirmed.